[Patentpractice] Patent Assignment question

[Tim Ackermann]

Randall, isn't it possible the inventor had an obligation to assign?
And, if so, perhaps the subsequent owner of the assets of the dissolved
company could enforce that obligation?
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
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     Grapevine TX 76051


On Wed, Sep 17, 2025 at 7:59 PM Randall Svihla via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I think the dissolved entity may be irrelevant.  The inventor never
> assigned his rights in the invention to the dissolved company, so he still
> owns his right in the invention and can assign it to the new company.
>
>
>
>
>
> *From:* Dale Quisenberry <dale at quisenberrylaw.com>
> *Sent:* Wednesday, September 17, 2025 8:29 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Randall Svihla <rsvihla at nsiplaw.com>; Charlene L. Odom <
> COdom at maynardnexsen.com>
> *Subject:* Re: Patent Assignment question
>
>
>
> Right.
>
>
>
> Need to consult applicable state law, including corporate law, and consult
> counsel in that state.
>
>
>
> The dissolved corporation would likely need to be reinstated first before
> it would have the capacity to enter into any corporate act, contract, etc.
> But again, consult counsel in the relevant state.
>
>
>
> Is there any agreement or obligation on the part of the inventor to assign
> to the dissolved entity?
>
>
>
> C. Dale Quisenberry
>
> Quisenberry Law PLLC
>
> 13910 Champion Forest Drive, Suite 203
>
> Houston, Texas 77069
>
> (832) 680.5000 (office)
>
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> www.quisenberrylaw.com
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> *From: *Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Randall Svihla via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Date: *Wednesday, 17 September 2025 at 7:20 pm
> *To: *For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc: *Randall Svihla <rsvihla at nsiplaw.com>, Charlene L. Odom <
> COdom at maynardnexsen.com>
> *Subject: *Re: [Patentpractice] Patent Assignment question
>
> Who is going to sign on behalf of the dissolved company?
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Charlene L. Odom via Patentpractice
> *Sent:* Wednesday, September 17, 2025 6:45 PM
> *To:* patentpractice at oppedahl-lists.com
> *Cc:* Charlene L. Odom <COdom at maynardnexsen.com>
> *Subject:* [Patentpractice] Patent Assignment question
>
>
>
> We are currently handling a matter involving a patent application that was
> originally filed under a company that has since been dissolved. However,
> prior to the dissolution, the inventor did not execute the assignment of
> rights to the original company.
>
>
>
> To ensure proper chain of title, we would like to confirm the appropriate
> course of action. Specifically, should the inventor now execute the
> assignment to the dissolved entity, followed by a subsequent assignment
> from the dissolved entity to the current holding company? Or would it be
> more appropriate for the inventor to assign the rights directly to the
> holding company?
>
>
>
> We want to ensure that the assignment record is clear and compliant with
> USPTO requirements.
>
>
>
> *Charlene L. Odom*
>
> *​**​**​**​*
>
> Paralegal
>
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